Practice/Industry Group Overview
Sutherland provides all the services clients need to identify, leverage, protect and defend the value of their intellectual property.
Intellectual property can be far more valuable—and more difficult to control—than almost any other type of corporate asset. Sutherland offers all of the services that companies need to establish and enforce their valuable IP portfolios in the United States and throughout the world. Many prominent global companies, including one of the world’s largest soft-drink companies and one of the world’s largest chemical companies, entrust us with their IP work. We also work with entrepreneurs and small companies with IP that may be the only significant asset. Our attorneys have the experience and knowledge to maximize IP portfolio value. We protect IP rights from filing patent and trademark applications to defending those rights in court and before government agencies.
The exceptional technical knowledge of our attorneys is one advantage Sutherland brings to clients. Of our approximately 30-plus attorneys who dedicate all their time to IP work, the vast majority are registered patent attorneys who provide counseling and representation in all aspects of U.S. and international patent law. A significant number of our IP lawyers also hold specialized or advanced degrees in technical fields.
When a dispute involves complex technology, Sutherland attorneys quickly grasp the subject matter and can easily explain complex technology in litigation. Our skilled trial attorneys represent plaintiffs and defendants in trials and legal proceedings in all forums—state, federal and foreign courts; arbitration and mediation inside and outside the United States; and administrative proceedings before the U.S. International Trade Commission (ITC), the U.S. Patent and Trademark Office (USPTO) and international patent offices.
Deep technical knowledge. Many of our attorneys have advanced technical training, including degrees in biology, biomedical engineering, chemical engineering, chemistry, computer engineering, electrical engineering, mechanical engineering, medicine, pharmacology and public health.
Full-service firm. With more than 400 attorneys, Sutherland provides a full range of legal services. We utilize cross-disciplinary teams to give our clients the most effective representation. Sutherland offers IP clients legal counsel that spans services, including licensing, outsourcing, mergers and acquisitions, business financing, entity formation, taxation and regulation by federal and state agencies.
Range. We provide clients with the entire range of IP services, including patent prosecution, trademark prosecution and copyright prosecution; trade secret and technology litigation and counseling; domain name portfolio management, recovery and dispute resolution; due diligence reviews in connection with mergers and acquisitions; intellectual property validity analysis and intellectual property audits and evaluations; freedom-to-practice opinions and patent infringement strategic counseling; technology transfer, licensing and other cooperative commercialization agreements; trademark prosecution, counseling and litigation; and trade secret and technology counseling and litigation.
Real-world experience. Sutherland attorneys have experience in countless industries and have worked in a variety of professions ranging from defense contracting to software development to biomedical research. Our IP attorneys also have backgrounds in government agencies, including as examining attorneys at the USPTO.
We listen. Whenever we work with clients, we listen carefully to determine their definition of a successful outcome, how important this particular matter is to their overall business goals, how this matter could affect other future operations, how it will impact individuals, and whether the client is most concerned about reaching a particular outcome, controlling costs or achieving a speedy resolution. Once we answer these questions, we proceed with a course of action.
Courtroom results. Our IP attorneys represent both plaintiffs and defendants in patent infringement, patent interference, and patent-related antitrust suits; trademark and trade dress infringement suits; trademark opposition and cancellation proceedings; copyright infringement suits; trade secret claims; federal and state unfair competition controversies; and false advertising and other Lanham Act claims. Along with our courtroom experience, we represent clients before administrative agencies such as the International Trade Commission and the USPTO’s Trademark Trial and Appeal Board.
Nuts and Bolts
Our attorneys advise on the full range of IP work, including:
- Prepare and file patent applications in all of the technological arts
- Prosecute patents in the U.S. and internationally
- Audit technology to identify patentable subject matter and to develop protection strategies
- Advise on alternative methods to protect patentable, commercially valuable information
- Map client patents and/or competitor patents for strategic analysis
- Develop and implement patent programs to grow and manage patent portfolio
- Perform due diligence reviews and negotiate IP-related provisions in mergers and acquisitions
- Prepare non-infringement invalidity and clearance opinions
- Analyze and advise with regard to infringement claims of patent-holding companies
- Draft, negotiate and advise about technology development and acquisition or licensing
- Litigate issues of ownership, licensing, validity and infringement
- Trademarks and service marks
- Perform searches to determine the availability of names and marks for use and/or registration
- Prepare and file trademark applications in the U.S. and abroad
- Prosecute trademark applications
- Represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board
- Advise on marketing, advertising or promoting regarding trademark use and protection
- Supervise trademark audits and perform due diligence in regards to corporate structuring and restructuring
- Handle issues relating to the transfer of marks or rights, such as by licensing, assignment, security agreements, mergers or acquisitions
- Police potentially infringing uses of our clients’ marks in the U.S. and abroad
- Litigate in federal and state courts regarding trademark grants, infringement and dilution, unfair trade practices, licensing and assignment
- Represent clients in Section 337 cases before the International Trade Commission
- Establish ownership of copyrighted works
- Register copyrights
- Handle issues relating to the licensing, transfer and assignment of copyrights
- Litigate claims of infringement and related matters
- International IP portfolio management
- Docket and maintain deadlines for registrations, pending applications, enforcement activities and litigations on a worldwide basis
- Counsel on developing IP rights, taking into account particular language or cultural issues for the target market, clearance of those rights and ad copy review prior to promotion and sale
- Advise on protecting those rights via filing, prosecution and registration, if appropriate, on a worldwide basis
- Engage and supervise foreign associate counsel
- Negotiate and draft license agreements and track use by licensees to monitor and maintain quality control
- Enforce and defend IP rights on a worldwide basis and in cyberspace
- Conduct due diligence worldwide
- Advise on forming and maintaining IP holding companies, the transfer of IP rights into such companies and licensing of those rights for use
- Record registered user or license agreements assignments and security interests in connection with transactions
- Conduct IP audits
- Advise on domain name portfolio management, recovery and dispute resolution
- Craft web site development agreements and terms and conditions of use, including linking agreements
- Develop privacy and security policies
- Draft portal agreements
- Draft software development and licensing agreements
- Develop Internet and intranet usage policies
- License traditional IP for online uses
- Counsel clients on infringement issues unique to the Internet
- Litigate and arbitrate infringement and unfair competition claims relating to online uses of trademarks, service marks, trade names and trade dress
- Trade secrets
- Assist with analyzing affected information and identifying appropriate protective measures
- Design employee policies regarding the treatment of sensitive information
- Prepare and assist with enforcing non-competition and confidentiality agreements
- Advise on implementing security measures
- Represent clients in trade secret litigation
Our IP industry knowledge and technical know-how, coupled with broad prosecution, transactional and litigation experience, create a keen understanding of current commercial and legal issues.
Sutherland successfully appeals patent infringement case in U.S. Court of Appeals for the Federal Circuit.
Sutherland represented General Protecht Group, an international electronics manufacturer, in its appeal of an ITC exclusion order, which the U.S. Court of Appeals for the Federal Circuit reversed after concluding that the client’s products did not infringe the asserted patents. Sutherland also obtained a U.S. Customs ruling that the client’s new product did not infringe those patents, clearing the product for import while the appeal was pending and while the ITC finally rescinded the exclusion order post-appeal.
Sutherland manages IP portfolio for a leading manufacturer of hosiery products and apparel.
Sutherland provides IP portfolio services to a leading manufacturer of hosiery products and apparel.
Sutherland advises Fortune 50 healthcare corporation on intellectual property matters.
Sutherland advises a Fortune 50 healthcare corporation on its intellectual property needs. We provide general patent counseling and worldwide patent prosecution, advise on patent portfolio strategies and third-party patent issues. We also advise on its trademarks.